Paper ____
`
`Filed on behalf of: Software Rights Archive, LLC
`
`
`
`
`By: Martin M. Zoltick, Lead Counsel
`
`Nancy J. Linck, Backup Counsel
`
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`
`
`Washington, DC 20005
`
`Phone: 202-783-6040
`
`Facsimile: 202-783-6031
`
`E-mail: mzoltick@rfem.com
`
`
`
`nlinck@rfem.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`FACEBOOK, INC., LINKEDIN CORP., AND TWITTER, INC.,
`Petitioners
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner
`_______________
`
`
`
`
`
`Case IPR2013-00480
`Patent 5,832,494
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`

`
`Case IPR2013-00480
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ................................................................................... iv 
`
`I. 
`
`II. 
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1 
`
`STATEMENT OF REASONS WHY NO INTER PARTES REVIEW
`SHOULD BE INSTITUTED UNDER 35 U.S.C. § 314 FOR GROUNDS
`1-10 FOR CLAIMS 1, 5, 8, 10, 11, 14-16, AND 35 ....................................... 5 
`
`A.  Ground 8 based on Small is redundant to Ground 1 based on the
`Fox Thesis and Ground 2 based on Fox SMART ................................. 5 
`
`B. 
`
`C. 
`
`Ground 6 – Tapper does not Disclose or Suggest All the Features
`of Claims 1, 5, 8, 10, and 11 ................................................................. 7 
`
`Grounds 1-10 – Petitioners fail to demonstrate how any of Fox
`Thesis, Fox Smart, Saito, Tapper, or Small discloses or would have
`suggested all the features of dependent claims 5 and 35 .................... 12 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`The Limitations of Claims 1 and 5 ........................................... 13 
`
`Ground 1 - Fox Thesis does not Disclose or Suggest All
`the Features of Claim 5 ............................................................. 17 
`
`Ground 2 - Fox SMART does not Disclose or Suggest
`All the Features of Claim 5 ....................................................... 25 
`
`Ground 4 - Saito does not Disclose or Suggest All the
`Features of Claim 5 ................................................................... 30 
`
`Ground 6 - Tapper does not Disclose or Suggest All the
`Features of Claim 5 ................................................................... 33 
`
`Grounds 8 and 9 - Small does not Disclose or Suggest All
`the Features of Claim 5 ............................................................. 35 
`
`Grounds 3, 5, 7, and 10 - Neither Envision, Salton,
`Pitkow, Nor Saito, which Petitioners additionally rely on
`for claim 35, Cure the Deficiencies of the References
`Applied to Claim 5 .................................................................... 37 
`
`
`
`ii
`
`

`
`Case IPR2013-00480
`
`D.  Grounds 9 and 10 are Deficient ........................................................... 37 
`
`1. 
`
`Petitioners have Failed to Meet their Threshold Burden
`of Showing That There is Reasonable Likelihood That
`Any Claim is Invalid on Grounds 9 and 10 .............................. 37 
`
`2. 
`
`Grounds 9 and 10 are Redundant to Other Grounds ................. 39 
`
`III.  GROUNDS NOT ADDRESSED IN PRELIMINARY RESPONSE ........... 40 
`
`IV.  CONCLUSION .............................................................................................. 40 
`
`
`
`iii
`
`

`
`Case IPR2013-00480
`
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`In re Arkley,
`455 F.2d 586 (CCPA 1972) ........................................................................ 22, 28
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ............................................................................. 11
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ........................................................................... 11
`
`Liberty Mutual Ins. Co. v. Progressive Car Ins. Co.,
`CBM2012-00003 (Paper 7) (PTAB Oct. 25, 2012) ........................... 4, 6, 38, 39
`
`Net MoneyIn, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................ 21, 22, 28
`
`Nissan N. Am., Inc. v. Bd. of Regents, The Univ. of Texas Sys.,
`IPR2012-00035 (Paper 30) (PTAB Mar. 19, 2013) ............................................ 6
`
`Statutes 
`
`35 U.S.C. § 103(a) ............................................................................................ 37, 38
`
`35 U.S.C. § 314 .......................................................................................................... 5
`
`35 U.S.C. § 314(a) .................................................................................................2, 3
`
`35 U.S.C. § 323 .......................................................................................................... 5
`
`Rules 
`
`37 C.F.R. § 42.1(b) .................................................................................................... 6
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 12
`
`37 C.F.R. § 42.108 ..................................................................................................... 5
`
`37 C.F.R. § 42.207(a) ................................................................................................. 1
`
`
`
`iv
`
`

`
`Case IPR2013-00480
`
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, Software Rights Archive,
`
`LLC, submits this Preliminary Response to the Petition for Inter Partes Review
`
`(“Petition”) of U.S. Patent No. 5,832,494 (“‘494 patent”) (Ex. 1001) filed by
`
`Facebook, Inc. (“Facebook”), LinkedIn Corp. (“LinkedIn”), and Twitter, Inc.
`
`(“Twitter”) (together the “Petitioners”).
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`
`The Board should deny, at least in part, the Petition for three independent
`
`reasons.
`
`First, Ground 8 alleges anticipation of claims 1, 5, and 14-16 of the ‘494
`
`patent in view of Henry G. Small & Michael E.D. Koenig, “Journal Clustering
`
`Using a Bibliographic Coupling Method,” 13 Info. Processing & Management
`
`277-288 (1977) (“Small”) (Ex. 1013). Ground 8 is redundant of Grounds 1 and 2
`
`for the same claims based on the Fox Thesis1 and Fox SMART,2 which are
`
`
`1 Edward A. Fox, “Extending the Boolean and Vector Space Models of
`
`Information Retrieval with P-Norm Queries and Multiple Concept Types,” Cornell
`
`Univ. Thesis, Aug. 1983 (“Fox Thesis”) (Ex. 1008).
`
`2 Edward A. Fox, “Some Considerations for Implementing the SMART
`
`Information Retrieval System under UNIX,” TR 83-560, Cornell Univ. Dept. of
`
`Comp. Science, Sept. 1983, Ithaca, NY (“Fox SMART”) (Ex. 1005).
`
`
`
`1
`
`

`
`Case IPR2013-00480
`
`cumulative of the Small reference. In fact, Petitioners admit that Small provides
`
`the same teachings as the Fox Thesis and Fox SMART, and fail to address how
`
`Small is more pertinent to a claim issue than the Fox Thesis and Fox Smart.
`
`Accordingly, Patent Owner respectfully submits that the Board should not initiate
`
`review on the basis of Ground 8.
`
`Second, Petitioners have failed to meet the threshold set forth in 35 U.S.C. §
`
`314(a) for institution of inter partes review based on Ground 6 – specifically, that
`
`claims 1, 5, 8, 10, and 11 of the ‘494 patent are anticipated by Colin Tapper, “The
`
`Use of Citation Vectors for Legal Information Retrieval,” 1 J.L.I.S. 131 (1982)
`
`(“Tapper”) (Ex. 1015).3 Petitioners have failed to demonstrate that there is a
`
`reasonable likelihood that they would prevail in showing that claims 1, 5, 8, 10,
`
`and 11 are unpatentable in view of Tapper. Petitioners fail to demonstrate how
`
`Tapper discloses or suggests, inter alia, “displaying the identity of one or more
`
`nodes using the actual cluster links,” as required by claim 1 and claims 5, 8, 10,
`
`and 11 depending therefrom. Accordingly, Patent Owner respectfully submits that
`
`
`3 Ground 6 also alleges that claims 14-16 of the ‘494 patent are anticipated by
`
`Tapper. Patent Owner does not agree that Tapper anticipates claims 14-16, but
`
`will substantively address those claims in the Patent Owner Response should inter
`
`partes review be instituted.
`
`
`
`2
`
`

`
`Case IPR2013-00480
`
`the Board should not institute review on the basis of Ground 6 for claims 1, 5, 8,
`
`10, and 11.
`
`Third, Petitioners have failed to meet the threshold set forth in 35 U.S.C. §
`
`314(a) for institution of inter partes review based on Grounds 1, 2, 4, 6, 8, and 9
`
`for claim 5 – specifically, that claim 5 of the ‘494 patent is anticipated or would
`
`have been obvious in view of Fox Thesis, Fox SMART, Saito,4 Tapper, or Small5 -
`
`- and on Grounds 3, 5, 7, and 10 for claim 35, which depends from claims 5.
`
`Dependent claim 5 is a very precise claim that modifies the “generating” step of
`
`claim 1, and Petitioners have failed to demonstrate how any of the references
`
`would have suggested all the features of this claim. Petitioners fail to even allege
`
`
`4 Tatsuki Saito et al., “A New Method of Modeling and Clustering for Citation
`
`Relationship,” 11 Eng’g Science Reports 327 (1989) (“Saito”) (Ex. 1011).
`
`5 Grounds 1, 2, 4, 6, 8, and 9 also allege that claims 1, 8, 10, 11, and 14-16 of the
`
`‘494 patent are anticipated or obvious in view of Fox Thesis, Fox Smart, Saito,
`
`Tapper, and Small. Patent Owner does not agree that Fox Thesis, Fox Smart,
`
`Saito, Tapper, or Small anticipates or renders obvious claims 1, 8, 10, 11, and 14-
`
`16, but will substantively address those claims, to the extent not otherwise
`
`addressed herein, in the Patent Owner Response should inter partes review be
`
`instituted.
`
`
`
`3
`
`

`
`Case IPR2013-00480
`
`specifically how any of the art teaches or would have suggested “eliminating
`
`candidate cluster links” or that the “number of candidate cluster links are limited,”
`
`such that the closest candidate cluster links are chosen over the remaining links, as
`
`required by claim 5. Accordingly, Patent Owner respectfully submits that the
`
`Board should not institute inter partes review of claim 5 on any ground.
`
` In deference to the Board’s mandate that the proceedings be completed
`
`within a year from institution and ability to institute on some, but not all, grounds,
`
`Patent Owner submits that the scope of any inter partes review of the claims of the
`
`‘494 patent should exclude those grounds and specific claims for which Petitioners
`
`have failed to meet their threshold burden, and where argument of cumulative or
`
`redundant references would only serve to obfuscate the underlying issues. This
`
`narrowing of issues will prevent the unnecessary exhaustion of time and resources
`
`that would accompany a review of all claims and all requested grounds.6
`
`
`6 See Liberty Mutual Ins. Co. v. Progressive Car Ins. Co., CBM2012-00003 (Paper
`
`7), at *2 (PTAB Oct. 25, 2012) (“We take this opportunity to note that multiple
`
`grounds, which are presented in a redundant manner by a petitioner who makes no
`
`meaningful distinction between them, are contrary to the regulatory and statutory
`
`mandates, and therefore are not all entitled to consideration. In the present
`
`situation, the multiplicity of grounds requires so much of the petition that the
`
`
`
`4
`
`

`
`Case IPR2013-00480
`
`II.
`
`STATEMENT OF REASONS WHY NO INTER PARTES REVIEW
`SHOULD BE INSTITUTED UNDER 35 U.S.C. § 314 FOR GROUNDS
`1-10 FOR CLAIMS 1, 5, 8, 10, 11, 14-16, AND 357
`A. Ground 8 based on Small is redundant to Ground 1 based on the
`Fox Thesis and Ground 2 based on Fox SMART
`
`
`Patent Owner respectfully submits that the Board should not initiate review
`
`on the basis of Ground 8, which relies on Small, since it is redundant of Grounds 1
`
`and 2 for the same claims based on the Fox Thesis and FOX SMART.
`
`The Board has authority to “deny some or all grounds for unpatentability for
`
`some or all of the challenged claims.” 37 C.F.R. § 42.108. The Board uses this
`
`
`Petitioner has failed to expressly identify the differences between any claim and
`
`the prior art in the Petitioner’s assertions of obviousness.”) (emphasis added).
`
`7 Petitioners did not include a statement of material facts in support of their
`
`petition. Accordingly, Patent Owner has not included a separate statement
`
`identifying material facts in dispute. In accordance with 35 U.S.C. § 323, this
`
`response is “preliminary” and Patent Owner reserves the right, should the petition
`
`be granted, to dispute in Patent Owner’s Response any fact alleged to be material
`
`by Petitioners, and to provide further material facts in support of Patent Owner’s
`
`position.
`
`
`
`
`
`5
`
`

`
`Case IPR2013-00480
`
`authority to conduct proceedings with “speedy … and inexpensive resolution.
`
`(Liberty Mutual Ins. Co., CBM2012-00003 (Paper 7), at *2)(quoting 37 C.F.R. §
`
`42.1(b)). To this extent, the Board denies grounds found to be cumulative to other
`
`grounds presented in a petition for inter partes review. (Nissan N. Am., Inc. v. Bd.
`
`of Regents, The Univ. of Texas Sys., IPR2012-00035 (Paper 30), at *18 (PTAB
`
`Mar. 19, 2013); Liberty Mutual Ins. Co., CBM2012-00003 (Paper 7), at *2). The
`
`Board has acknowledged that references are cumulative to each other if the
`
`references “provide essentially the same teaching to meet the same claim
`
`limitation,” and (2) “the associated arguments do not explain why one reference
`
`more closely satisfies the claim limitation at issue in some respects than another
`
`reference.” (Liberty Mutual Ins. Co., CBM2012-00003 (Paper 7), at *3).
`
`Small (Ex. 1013) is cumulative to both the Fox Thesis (Ex. 1008) and Fox
`
`SMART (Ex. 1005). Particularly, Petitioners admit that “there is an uninterrupted
`
`stream of research dating to the 1960s that uses indirect citation relationships to
`
`facilitate information retrieval,” where Dr. Gerar Salton’s pioneering work in this
`
`field led to further work by M.M. Kessler, Henry Small, and others, and then by
`
`Dr. Fox himself, all of which used indirect relationships (such as ‘co-citation’
`
`and ‘bibliographic coupling’) to measure similarity between documents and
`
`improve document retrieval.” Petition at p. 4 (emphasis added).
`
`
`
`6
`
`

`
`Case IPR2013-00480
`
`While Patent Owner does not acquiesce to any of these assertions, Patent
`
`Owner notes that Petitioners admitted that Small and the references authored by
`
`Dr. Fox (Fox Thesis and Fox SMART) all use “co-citation” and “bibliographic
`
`coupling” to measure similarity between documents and improve document
`
`retrieval. As such, Petitioners acknowledge that Fox Thesis, Fox SMART, and
`
`Small provide the same teachings.
`
`Moreover, Petitioners have failed to provide any reasons why either Fox
`
`SMART or the Fox thesis “more closely satisfies … [a] claim limitation at issue”
`
`than Small. In this regard, Petitioners have merely applied Small redundantly with
`
`respect to Fox Thesis and Fox SMART.
`
`Both legislative and Board policy mandate that the Board find Ground 8
`
`based on Small redundant to Ground 1 based on the Fox Thesis and Ground 2
`
`based on Fox SMART. Accordingly, Patent Owner respectfully submits that the
`
`Board should not initiate inter partes review on the basis of Ground 8.
`
`B. Ground 6 – Tapper does not Disclose or Suggest All the Features
`of Claims 1, 5, 8, 10, and 11
`
`
`Patent Owner submits that the Board should not initiate review on the basis
`
`of Ground 6 for claims 1, 5, 8, 10, and 11 because Petitioners have failed to
`
`demonstrate that there is a reasonable likelihood that they would prevail in
`
`showing that claims 1, 5, 8, 10, and 11 are unpatentable in view of Tapper.
`
`
`
`7
`
`

`
`Case IPR2013-00480
`
`Claim 1 of the ‘494 patent recites, inter alia, “displaying the identity of one
`
`or more nodes using the actual cluster links.” By way of summary, in non-limiting
`
`embodiments, the ‘494 patent discloses an improved system for computerized
`
`searching of data on a database or network. (Ex. 1001 at 3:20-23). The three
`
`primary components of the ‘494 patent, which are illustrated in Fig. 2, include a
`
`Proximity Indexing Application Program 62 (“Indexing Program”), a Computer
`
`Search Program for Data Represented by Matrices (“CSPDM”) 66, and a user
`
`interface implemented by a graphical user interface (GUI) program 70. (Ex. 1001
`
`at 3:35-40 and 11:29-60).
`
`The Indexing Program 62 indexes a database to a proper format to enable the
`
`CSPDM 66 to properly search a database. (Ex. 1001 at 11:38-43). The CSPDM
`
`66 searches the indexed database for objects in accordance with instructions
`
`provided by a user. (Ex. 1001 at 11:49-52). The CSPDM 66 retrieves and
`
`forwards requested objects from the indexed database to the GUI program 70 for
`
`display on a display device. (Ex. 1001 at 11:52-55).
`
`Data in the indexed database may be represented as a node. (Ex. 1001 at
`
`12:29-33). A node “is any entity that can be represented by a box on a display …
`
`such as a GUI.” (Ex. 1001 at 12:34-35). For example, a node might be “an object
`
`in a database..., a portion of an object in a database…, a document, a section of a
`
`document, a World Wide Web page, or an idea or concept, such as a topic.” (Ex.
`
`
`
`8
`
`

`
`Case IPR2013-00480
`
`1001 at 12:35-39). Fig. 5B, reproduced below, is an exemplary illustration of a
`
`node. For example, as illustrated in Fig. 5B, box 1032 is a display of a node that
`
`is, in this example, a textual object in a database. (Ex. 1001 at 29:19-24).
`
`
`
`(‘494 patent, Fig. 5B)
`
`Petitioners assert that Tapper anticipates all of the features of claim 1
`
`(Ground 6). Tapper is generally directed to use of case citations as selection
`
`vectors in a legal information retrieval system. (Ex. 1015 at p. 4). In this regard,
`
`Tapper describes conducting an experiment on case citation vectors using a
`
`database and a program to determine the effectiveness of weighting and correlating
`
`case citation vectors. (Ex. 1015 at pp. 12 and 13).
`
`Petitioners cite Tapper as follows:
`
`
`9
`
`
`
`

`
`Case IPR2013-00480
`
`
`Petition at p. 45. The Petitioners clearly identify the “case” of Tapper as the
`
`
`
`recited “node,” as demonstrated by Petitioners’ annotated quote of Tapper:
`
`
`
`Petition at p. 44 (emphasis added).
`
`These cited portions of Tapper generally describe selecting a case and
`
`identifying cases that resemble the selected case in the experimental citation vector
`
`retrieval system of Tapper. However, Petitioners’ cited portions of Tapper fail to
`
`disclose or suggest a display of an identity of any case or relevant case. Tapper
`
`merely describes an experiment conducted to determine the effectiveness of
`
`citation vectors to determine the relevancy of one case to another case. However,
`
`Tapper is devoid of any disclosure or suggestion of a display of “the identity of one
`
`or more nodes,” as required by claim 1. That is, “displaying the identity of one or
`
`more nodes,” as part of a computerized research system, as required by claim 1, is
`
`
`
`10
`
`

`
`Case IPR2013-00480
`
`patentably distinct from conducting an experiment of merely selecting a case and
`
`identifying cases resembling the selected case, as described in Tapper.
`
`
`
`It is clear that Tapper does not explicitly disclose or suggest “displaying the
`
`identity of one or more nodes.” Moreover, the displaying step of claim 1
`
`specifically requires displaying the identity of one or more nodes “using the actual
`
`cluster links.” Petitioners do not specifically address this limitation of the claim or
`
`provide any explanation as to how the citation vectors and related disclosure in
`
`Tapper allegedly teach this requirement of claim 1.
`
`Furthermore, Petitioners fail to provide any reasoning regarding why a
`
`display for providing search results is implicitly disclosed in the theoretical
`
`experiment of Tapper. To the extent that Petitioners assert that any of the above-
`
`identified missing features of Tapper are inherent, they have failed to carry their
`
`burden. To establish inherency, the extrinsic evidence “must make clear that the
`
`missing descriptive matter is necessarily present in the thing described in the
`
`reference, and that it would be so recognized by persons of ordinary skill.
`
`Inherency, however, may not be established by probabilities or possibilities. The
`
`mere fact that a certain thing may result from a given set of circumstances is not
`
`sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added)
`
`(internal citations omitted); see also In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir.
`
`1993) (“The fact that a certain result or characteristic may occur or be present in
`
`
`
`11
`
`

`
`Case IPR2013-00480
`
`the prior art is not sufficient to establish the inherency of that result or
`
`characteristic.”). The Petition fails to allege that any teaching not expressly
`
`disclosed in Tapper is “necessarily present.”
`
`
`
`Since Petitioners’ assert that Tapper anticipates claim 1, Petitioners have
`
`failed to meet their burden of showing that there is a reasonable likelihood that
`
`they would prevail in showing that claim 1 is unpatentable over Tapper. See 37
`
`C.F.R. § 42.104(b)(4).
`
`Accordingly, Patent Owner submits that institution of inter partes review
`
`based on Ground 6 should be denied for claim 1, and claims 5, 8, 10, and 11
`
`depending therefrom.
`
`C. Grounds 1-10 – Petitioners fail to demonstrate how any of Fox
`Thesis, Fox Smart, Saito, Tapper, or Small discloses or would
`have suggested all the features of dependent claims 5 and 35
`
`
`Petitioners have failed to demonstrate that any reference teaches, or would
`
`have suggested, all of the features of dependent claim 5 and claim 35 depending
`
`therefrom. Accordingly, Patent Owner submits that the Board should not initiate
`
`review on the basis of Grounds 1, 2, 4, 6, 8, and 9 for claim 5 or on Grounds 3, 5,
`
`7, and 10 for claim 35. Petitioners did not meet their burden to demonstrate that
`
`there is a reasonable likelihood that they would prevail in showing that claims 5 or
`
`35 are unpatentable in view of Fox Thesis, Fox Smart, Saito, Tapper, or Small.
`
`
`
`
`
`12
`
`

`
`Case IPR2013-00480
`
`1.
`
`The Limitations of Claims 1 and 5
`
`
`
`As described above, the ‘494 patent is generally directed to systems and
`
`methods for computerized indexing and searching of a database. For instance, the
`
`textual objects and other data in the database may be indexed by creating
`
`numerical representations for a set of objects chosen for indexing from the
`
`database. Ex. 1001 at Abstract. An indexing technique, referred to as “proximity
`
`indexing,” generates representations of relationships, patterns, or similarity to
`
`determine the degree of relatedness of database objects. In claimed embodiments,
`
`the invention employs a cluster link generation algorithm which uses links and
`
`nodes to generate derived relationships called “cluster links.” The cluster links are
`
`used to proximity index a database. Id.
`
`
`
`Further, the novel method may generate “candidate cluster links” and derive
`
`“actual cluster links” to determine the strongest cluster link relationships in the
`
`database to efficiently analyze a data base. Ex. 1001 at 21:45 – 24:1. Only a
`
`subset of the candidate cluster links, the “actual cluster links,” are used in the
`
`proximity index may be selected based on certain criteria. Ex. 1001 at 22:1-4. A
`
`cluster link generator is a specific type of a patterner, and, as such, its output is
`
`used to support the pool and single node search routines of the CSPDM. Ex. 1001
`
`at 21:30-33; see, e.g., Ex. 1001 at Step 460 of Fig. 4H. Ranks and other values for
`
`the search nodes (i.e., nodes that are analyzed for searching) of the pool based and
`
`
`
`13
`
`

`
`Case IPR2013-00480
`
`single node search routines are generated using cluster links. See, e.g., Ex. 1001 at
`
`Steps 464 and 460 of Fig. 4H.
`
`The claims of the ‘494 patent that Petitioners have identified are directed to
`
`several embodiments of the inventive computer research tools for indexing,
`
`searching, and displaying data detailed in the specification. Limitations such as
`
`“generating candidate cluster links” and “deriving actual cluster links” are related
`
`to the analysis and display of indirect relationships (i.e., relationships between
`
`objects through a chain of referential citations) in a database. The analysis and
`
`display of indirect relationships is an important aspect of the invention.
`
`Claim 5 depends from claim 1, and thus, a proper analysis of claim 5 begins
`
`with the language of claim 1, which reads:
`
`A method of analyzing a database with indirect relationships, using
`links and nodes, comprising the steps of:
`[1] selecting a node for analysis;
`[2] generating candidate cluster links for the selected node, wherein
`the step of generating comprises an analysis of one or more indirect
`relationships in the database;
`[3] deriving actual cluster links from the candidate cluster links;
`[4] identifying one or more nodes for display; and
`[5] displaying the identity of one or more nodes using the actual
`cluster links.
`
`
`
`
`
`14
`
`

`
`Case IPR2013-00480
`
`Ex. 1001 at 51:38-48. This claim comprises five elements; the first three involve
`
`analyzing a database using links and nodes, and the last two entail identifying and
`
`displaying nodes. Of note, the claim recites distinct steps of: (1) generating
`
`candidate cluster links; and (2) deriving actual cluster links from the candidate
`
`cluster links.
`
`
`
`Claim 5 is a very specific claim, and reads:
`
`The method of claim 1 wherein the step of generating the candidate
`cluster links comprises the step of:
`[2.1] eliminating candidate cluster links, wherein the number of
`candidate cluster links are limited and the closest candidate cluster
`links are chosen over the remaining links.
`
`Ex. 1001 at 51:66 – 52:4 (emphasis added). From the plain language of claim 5, it
`
`is apparent that the claim requires that:
`
` The claimed elimination of candidate cluster links must occur during
`
`the generating candidate cluster links step of claim 1. As such,
`
`“eliminating” requires actually paring down candidate cluster links
`
`before the deriving step of claim 1. See claim 1 (“deriving actual
`
`cluster links from the candidate cluster links”) (emphasis added).
`
` “Eliminating” requires the actual pairing down or pruning of
`
`candidate cluster links. Because the claim requires “eliminating
`
`
`
`15
`
`

`
`Case IPR2013-00480
`
`candidate cluster links,” the eliminated links have to have been
`
`generated. Unanalyzed relationships that may exist in the database
`
`are not analyzed or even generated so they cannot be selected as
`
`actual cluster links; therefore they are not ‘candidate cluster links.’
`
`The failure to consider such relationships, or to generate candidate
`
`cluster links from them, cannot reasonably be understood to teach or
`
`suggest a limitation that requires elimination of candidate cluster links
`
` “[T]he number of candidate cluster links are limited” is a distinct
`
`claim limitation that sets forth a numerical limit (for example, the “top
`
`200”) to the number of candidate cluster links generated. This cannot
`
`be met simply by eliminating or failing to generate links. See, e.g.,
`
`Ex. 1001 at 24:12-14 (“After each iteration, the candidate cluster link
`
`set Ci may be pruned so that it contains only the top candidate cluster
`
`links (for example, the top 200).”).
`
` Because the claim 5 limitation applies to the “generating” candidate
`
`cluster links step and not the “deriving” actual cluster links step, there
`
`must still be a deriving actual cluster links step that is separate from
`
`the eliminating candidate cluster links step specified in claim 5 and
`
`which further derives cluster links in order to meet all of the
`
`limitations of claim 5.
`
`
`
`16
`
`

`
`Case IPR2013-00480
`
`If a reference is deficient in any one of these aspects, the reference cannot
`
`anticipate claim 5. Each of the references relied upon by Petitioners fail to teach,
`
`and would not have suggested, one or more of these specific features of claim 5.8
`
`2.
`
`Ground 1 - Fox Thesis does not Disclose or Suggest All the
`Features of Claim 5
`
`
`
`Petitioners assert that Fox Thesis anticipates claim 5 (Ground 1). Fox Thesis
`
`teaches using matrices to store information about bibliographic references and
`
`various indirect bibliographic connections (namely, bibliographic coupling and co-
`
`citation). While Petitioners assert that these teachings “demonstrate[] that cluster
`
`analyzing using indirect relationships ... was already well known..,” they fail to
`
`provide a detailed or specific explanation as to how Fox Thesis anticipates the very
`
`specific limitations of claim 5.9 Rather, the discussion in the Petition is limited to
`
`
`8 Patent Owner does not agree with Petitioners’ claim construction and reserves the
`
`right to construe these claim terms in the Patent Owner Response should the Board
`
`institute inter partes review for the ‘494 patent. However, Patent Owner submits
`
`that, even under Petitioners’ claim construction, the above-identified features of
`
`claim 5 are neither disclosed nor suggested in Petitioners’ references.
`
`9 The Declaration of Edward A. Fox, Ph.D. (the “Fox Decl.”) (Ex. 1009) similarly
`
`fails to address these features, dedicating only a single paragraph to claim 5.
`
`
`
`17
`
`

`
`Case IPR2013-00480
`
`broad assertions that Fox Thesis allegedly “discloses clusters generated based on
`
`indirect relationships” because of its recitation of bc, cc, ln, and tm, sub-vectors,
`
`and that the “Fox Thesis uses all possible cluster links included in the ‘complete
`
`extended vector.’” Petition at p. 11 (emphasis in original).
`
` Aside from the single paragraph in the Fox Decl., the only portion of the
`
`Petition even ostensibly directed to claim 5 is as follows:
`
`
`
`Petition at p. 14. Patent Owner submits that this mere quoting of Fox Thesis
`
`without any explanation or reasoning is plainly deficient on its face. Petitioners
`
`elected, for whatever strategic purposes, to not provide any explanation mapping
`
`the quoted passages to the specific limitations of claim 5. There is good reason for
`
`that -- the portions of Fox Thesis cited by the Petitioners are unrelated to the
`
`features of claim 5.
`
`
`
`18
`
`

`
`Case IPR2013-00480
`
`The cited portions of the Fox Thesis generally describe clustering.
`
`However, by only quoting disparate (and unrelated) portions of the Fox Thesis,
`
`Petitioners have failed to identify any portion of the Fox Thesis that discloses, for
`
`instance: (1) an elimination of a candidate cluster link, (2) where or how the
`
`number of candidate cluster links are limited, and/or (3) that the closest links are
`
`chosen over the remaining links, as required by claim 5. They have failed to
`
`identify all of these features, and have not even attempted to explain how these
`
`features are part of the “generation” step such that there remains an identified step
`
`of deriving actual cluster links (claim 1) that is separate from the elimination of
`
`candidate cluster links.
`
`It appears that the Petitioners are asserting that the following quotation and
`
`Figure 7.1 (“Dendogram from Hierarchical Clustering”) teach “eliminating
`
`candidate cluster links, wherein the number of candidate cluster links are limited
`
`and the closest candidate cluster links are chosen over the remaining links,” as
`
`required by claim 5:
`
`After a similarity matrix has been produced a unique hierarchical
`clustering results which can be displayed as a dendogram such as that
`shown in Figure 7.1. With threshold value L1, only A and B are
`linked, while with the lower threshold value L2, C,D, and E are also
`connected – i.e., pairwise similarities with value greater than L2 exist
`among at least two of the three possible pairs: C-D, C-E, and D-E.
`
`
`Ex. 1008 at pp. 210-211; see Petition at p. 14.
`
`
`
`19
`
`

`
`Case IPR2013-00480
`
`
`
`As an initial matter, the relied-upon quotation from Fox Thesis is from a
`
`section titled “7.1.2.3 Single Link Document Classifications,” and is directed to the
`
`generalized use of clustering and does not contain any disclosure of using
`
`bibliographic data or non-semantical relationships. Compare Ex. 1008 at p. 215
`
`(“7.1.3. Cluster with Bibliographic Data”). Similarly, the referenced Figure 7.1 is
`
`als